Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The amendment is supported by the original disclosure.
The previous restriction and 103 rejections have been maintained and repeated, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 103
Claim(s) 15-16, 18, and 30-31 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Giroud-Abel et al. (US 4977213, listed on IDS and ISR) in view of BASF’s Elastolan catalog “Elastolan”, evidenced by Juergen (DE 102006019562), and in further view of Minkwitz et al. (WO2018050487, US 20200123335 as English equivalent).
As to claims 15-16, 18, and 30-31, Giroud-Abel (claims, abs., 1:10-20, 3:15-20, 5:1-10, 8:65-68-9:1-10, Ex.2) discloses a molding composition comprising a polyamide (30-70%) based on dimer acid/caprolactam(ε-Lactam)//hexamethylenediamine, 70-30% of elastomer, and an exemplary thermoplastic polyurethane (2e), such as BASF’s Elastolan. Elastolan is a thermoplastic polyurethane prepared from aromatic or aliphatic diisocyanate, as evidenced by BASF’s Elastolan catalog.
Giroud-Abel is silent on the claimed Shore hardness of the claimed TPU having the claimed Shore hardness.
In the same area of endeavor of producing mold, Elastolan catalog (pg2, 6-7) teaches Elastolan 1180A10 TPU (Shore hardness 80A, the same used in instant examples [0248]) renders excellent hydrolysis resistance, cold flexibility, and resistance to microorganisms. Elastolan 1180A10 is commercially available in 2007, as evidenced by DE 102006019562. Elastolan 1180A10 TPU would inherently yield the claimed Shore hardness, because in view of the substantially identical composition (in this case, the disclosed TPU), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Giroud-Abel, Elastolan, and Juergen are silent on the claimed Tg of the claimed polyamide.
Solving the same problem of lower the modulus of a polyamide as of Giroud-Abel (2:28-30), Minkwitz (abs., claims, 2, 9-15) discloses a polyamide:
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having a Tg of 25-45 °C. The polyamide shows improved low temperature toughness, puncture resistance, and transparency. The disclosed ranges of lactam, diacid, and diamines overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Therefore, as to claims 15-16, 18, and 30-31, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Giroud-Abel and utilized Elastolan 1180A10 as the TPU in view of BASF’s Elastolan catalog, because the resultant composition would yield a mold with improved hydrolysis resistance, cold flexibility, and resistance to microorganisms. Furthermore, it would have been obvious to one of ordinary skill in the art to have replaced the polyamide disclosed by Giroud-Abel with the aforementioned polyamide of Minkwitz, because the resultant composition would yield a mold with improved low temperature toughness, puncture resistance, and transparency.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
The applicant individually attacked (5:6-6:2, 7:1) Giroud-Abel fails to the claimed polyamide. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See MPEP-2145. Solving the same problem of lower the modulus of a polyamide as of Giroud-Abel (2:28-30), Minkwitz (abs., claims, 2, 9-15) discloses the claimed polyamide. The polyamide shows improved low temperature toughness, puncture resistance, and transparency. The disclosed ranges of lactam, diacid, and diamines overlapping with the claimed range. Minkwitz alleviates the deficiency of Giroud-Abel.
In response to applicant's argument (6:3-4) that Minkwitz is non-analogous art, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Minkwitz (abs., claims, 2, 9-15) solves the same problem of lower the modulus of a polyamide as of Giroud-Abel (2:28-30). Thus, Minkwitz is an analogous art
Applicant's argument of unexpected results (6:4) of low process temperature is unpersuasive and insufficient. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest art, in this particular case, Giroud-Abel. Unexpected results must be commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range and generic structures. Therefore, Applicant should compare several compositions containing claimed components of A, B, and C in amounts at several data points over the claimed range to several compositions containing the same claimed components of A, B, and C in amounts at several data points outside of the claimed range, including data points close to and far from the claimed range. The examiner reminds applicants’ that these results are “UNEXPECTED”, therefore how can one logically predict what the results would be for distinctly different polymers. Thus, the examiner asserts the showing of unexpected results is insufficient for the claims in their present state.
Therefore, as to claims 15-16, 18, and 30-31, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Giroud-Abel and utilized Elastolan 1180A10 as the TPU in view of BASF’s Elastolan catalog, because the resultant composition would yield a mold with improved hydrolysis resistance, cold flexibility, and resistance to microorganisms. Furthermore, it would have been obvious to one of ordinary skill in the art to have replaced the polyamide disclosed by Giroud-Abel with the aforementioned polyamide of Minkwitz, because the resultant composition would yield a mold with improved low temperature toughness, puncture resistance, and transparency.
Therefore, the previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment.
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766